JUDGE SI

JS 44C/SDNY
REV. 2/2014 14 CV 3292
CIVIL COVER SHEI
The JS-44 civil cover sheet and the information contained herein neither replace nor supplement the filing and servl
pleadings or other papers as required by law, except as provided by local rules of court. This form, approved b;
Judicial Conference of the United States in September 1974, is required for use of the Clerk of Court for the purpo:
initiating the civil docket sheet.
*Y0 6M
PLAINTIFFS
NESPRESSO USA, INC.
DEFENDANTS
HILINE COFFEE COMPANY, INC.
ATTORNEYS (FIRM NAME,ADDRESS, ANDTELEPHONE NUMBER
Mayer Brown LLP, 1675 Broadway, New York, New York 10019
Telephone: (212)506-2500
ATTORNEYS (IF KNOWN)
CAUSE OF ACTION (CITE THEU.S. CIVIL STATUTE UNDER WHICH YOU AREFILING AND WRITE ABRIEF STATEMENT OF CAUSE)
(DO NOT CITE JURISDICTIONAL STATUTES UNLESS DIVERSITY)
15 U.S.C. 1114, 15 U.S.C. 1125,17 U.S.C. 501, N.Y. GEN. BUS LAW349(a): Trademark, trade dress and copyright infringement
Has this action, case, or proceeding, or one essentially the same been previously filed in SDNYat any time? No0Yes|_ljiludge Previously Assigned
If yes, wasthis case Vol. I I Invol. I I Dismissed. No fj Yes fj Ifyes,give date. & Case No.
IS THIS AN INTERNATIONALARBITRATIONCASE? No Yes D
(PLACEAN[x] INONEBOXONLY) NATURE OF SUIT
ACTIONS UNDER STATUTES
CONTRACT PERSONAL INJURY PERSONAL INJURY FORFEITURE/PENALTY BANKRUPTCY OTHER STATUTES
I I "0 INSURANCE I 1310 AIRPLANE [ ] 362 PERSONAL INJURY - 11610 AGRICULTURE [ J 422 APPEAL [ 1400 STATE
11120 MARINE I 1315 AIRPLANE PRODUCT MED MALPRACTICE [ ]620 OTHER FOOD & 28 USC 158 REAPPORTIONMENT
11130 MILLER ACT LIABILITY [ ] 365 PERSONAL INJURY DRUG [ ] 423 WITHDRAWAL I 1410 ANTITRUST
11140 NEGOTIABLE [ ]320 ASSAULT, LIBEL & PRODUCT LIABILITY I I 625 DRUG RELATED 28 USC 157 I I 430 BANKS & BANKING
INSTRUMENT SLANDER [ ] 368 ASBESTOS PERSONAL SEIZURE OF I I 450 COMMERCE
I 1150 RECOVERY OF [ J 330 FEDERAL INJURY PRODUCT PROPERTY I I 460 DEPORTATION
OVERPAYMENT & EMPLOYERS' LIABILITY 21 USC 861 PROPERTY RIGHTS I I 470 RACKETEER INFLU
ENFORCEMENT LIABILITY [ J 630 LIQUOR LAWS ENCED & CORRUPT
OF JUDGMENT I I 340 MARINE PERSONAL PROPERTY I I 640 RR STRUCK [ ] 820 COPYRIGHTS ORGANIZATION ACT
11151
MEDICARE ACT I I 345 MARINE PRODUCT [ ]650 AIRLINE REGS [ ] 830 PATENT (RICO)
11152 RECOVERY OF LIABILITY [ ] 370 OTHER FRAUD [ J 660 OCCUPATIONAL M840 TRADEMARK I 1480 CONSUMER CREDIT
DEFAULTED [ ]350 MOTOR VEHICLE [ ] 371 TRUTH IN LENDING SAFETY/HEALTH I 1490 CABLE/SATELLITE TV
STUDENT LOANS I I 355 MOTOR VEHICLE [ ] 380 OTHER PERSONAL [ J 690 OTHER 11810 SELECTIVE SERVICE
(EXCL VETERANS) PRODUCT LIABILITY PROPERTY DAMAGE SOCIAL SECURITY [ ]850 SECURITIES/
11153 RECOVERY OF I I 360 OTHER PERSONAL [ ] 38S PROPERTY DAMAGE COMMODITIES/
OVERPAYMENT INJURY PRODUCT LIABILITY LABOR [ )861 HIA(1395ft) EXCHANGE
OF VETERANS [ ]862 BLACKLUNG (923) I I 675 CUSTOMER
BENEFITS 11710 FAIR LABOR [ J 863 DIWC/DIWW (405(g)) CHALLENGE
11160 STOCKHOLDERS STANDARDS ACT [ ]864 SSID TITLE XVI 12 USC 3410
SUITS I I 720 LABOR/MGMT [ ] 865 RSI (405(g)) [ ]890 OTHER STATUTORY
|]190 OTHER PRISONER PETITIONS RELATIONS ACTIONS
CONTRACT I I 730 LABOR/MGMT [J 891 AGRICULTURAL ACTS
11195 CONTRACT [ ]510 MOTIONS TO REPORTING & FEDERAL TAX SUITS [ ]892 ECONOMIC
PRODUCT ACTIONS UNDER STATUTES VACATE SENTENCE DISCLOSURE ACT STABILIZATION ACT
LIABILITY 28 USC 2255 I I 740 RAILWAY LABOR ACT [ J 870 TAXES (U.S. Plaintiff or [ J 893 ENVIRONMENTAL
11196 FRANCHISE CIVIL RIGHTS [ ] 530 HABEAS CORPUS I I 790 OTHER LABOR Defendant) MATTERS
[ ] 535 DEATH PENALTY LITIGATION [ J 871 IRS-THIRD PARTY I I 894 ENERGY
I 1441 VOTING []540 MANDAMUS&OTHER 11791 EMPL RET INC 26 USC 7609 ALLOCATION ACT
I I 442 EMPLOYMENT SECURITY ACT [ ]895 FREEDOM OF
REAL PROPERTY I I 443 HOUSING/ INFORMATION ACT
ACCOMMODATIONS IMMIGRATION [ ]900 APPEAL OF FEE
11210 LAND [ ]444 WELFARE PRISONER CIVIL RIGHTS DETERMINATION
CONDEMNATION [J44S AMERICANS WITH [J 462 NATURALIZATION UNDER EQUAL
[ I 220 FORECLOSURE DISABILITIES - [ ] 550 CIVIL RIGHTS APPLICATION ACCESS TO JUSTICE
[ ]230 RENT LEASE & EMPLOYMENT [ J 555 PRISON CONDITION 11463 HABEAS CORPUS- I I 950 CONSTITUTIONALITY
EJECTMENT I I 446 AMERICANS WITH ALIEN DETAINEE OF STATE STATUTES
II 240 TORTS TO LAND DISABILITIES -OTHER 11465 OTHER IMMIGRATION
I I 245 TORT PRODUCT
LIABILITY
[ J 440 OTHER CIVIL RIGHTS
(Non-Prisoner)
ACTIONS
[ ]290 ALL OTHER
REAL PROPERTY
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(PLACEAN X INONEBOXONLY)
ffl 1 Original • 2 Removed from • 3 Remanded
Proceeding state Court ,„„,
• a. all partlet represented Appellate
•—' Court
I I b. Atleastone
party is pro se.
ORIGIN
I I4 Reinstated or LJ 5 Transferred from LZI 6 Multidistrict
Reopened (Specify District) Litigation
I I 7 Appeal toDistrict
Judge from
Magistrate Judge
Judgment
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D 1 U.S. PLAINTIFF • 2 U.S. DEFENDANT [X| 3 FEDERAL QUESTION Q4 DIVERSITY
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CITIZENSHIP OF PRINCIPAL PARTIES (FOR DIVERSITYCASES ONLY)
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CITIZEN OF THIS STATE
PTF DEF
;• 1 • • 1 CITIZEN OR SUBJECT OF A
FOREIGN COUNTRY
PTF DEF PTF DEF
[]3[]3 INCORPORATED and PRINCIPAL PLACE []5 []5
OF BUSINESS IN ANOTHER STATE
CITIZENOF ANOTHER STATE []2 []2 INCORPORATED or PRINCIPAL PLACE []4[]4 FOREIGN NATION
OF BUSINESS IN THIS STATE
PLAINTIFF(S) ADDRESS(ES) AND COUNTY(IES)
100 Park Avenue, 7th Floor, New York, New York 10017, United States, New York County
DEFENDANT(S) ADDRESS(ES) AND COUNTY(IES)
1133 Broadway, Ste. 706, New York, New York 10010, United States, New York County
[]6 I ]6
DEFENDANT(S) ADDRESS UNKNOWN
REPRESENTATION IS HEREBY MADE THAT, AT THIS TIME, I HAVE BEEN UNABLE, WITH REASONABLE DILIGENCE, TO ASCERTAIN THE
RESIDENCE ADDRESSES OF THE FOLLOWING DEFENDANTS:
Checkone: THIS ACTION SHOULD BEASSIGNED TO: • WHITE PLAINS |X| MANHATTAN
(DO NOT check either box if this a PRISONER PETITION/PRISONER CIVILRIGHTS COMPLAINT.)
DATE 5/6/2014
RECEIPT #
SIGNATURE OF ATTORNEY OF RECORD
(k*JL$.-V^ —
Magistrate Judge Is to be
Magistrate Judge
Ruby J. Krajick, Clerk of Court by . Deputy Clerk, DATED.
UNITEDSTATES DISTRICT COURT (NEW YORK SOUTHERN)
ADMITTED TO PRACTICE IN THIS DISTRICT
[] NO
N YES(DATE ADMITTED Mo. Sept. Yr. 1990 )
Attorney Bar Code # AM5829
is so Designated.
UNITED STATES DISTRICT COURT
SOUTHERN DISTRICT OF NEW YORK
NESPRESSO USA, INC.,
Plaintiff,
14,CV,323£T
Case No. , •. ~„
v.
HILINEG^|$d8mPANY, INC.,
Defendant.
JURY TRIAL DEMANDED
^•" ""•:;
COMPLAINT
•••••••••••••IIHHilMHHIHiimH
Plaintiff, Nespresso USA, Inc. ("Nespresso" o( "Plaintiff), by and tbi^uglTjitSo
cz
undersigned counsel, complains of Defendant HiLine Coffee Company, Inc. ("HiLine51"or ""*
"Defendant") as follows:
NATURE OF THE ACTION
i 1. This is an action for an injunction, an accounting and money damages arising
from HiLine's willful infringement of Nespresso's trademarks, trade dress and copyrights, and
unfair competition under federal and state law. Particularly, this action arises out of HiLine's
operation of a business dedicated to the manufacture, offering for sale and sale of what it has
coined "Nespresso® compatible" coffee capsules, which HiLine has "designed to be compatible
with Nespresso machine [s]" by using technologies patented by Nespresso, emulating
Nespresso's famous trade dress, and improperly using Nespresso's trademarks to trick
consumers into believing that its products are endorsed and/or sponsored by Nespresso. (See
Exhibit A). Indeed, HiLine has conjured up an entire business by unlawfully trading off of
Nespresso's valuable assets and goodwill, which has caused, and continues to cause, irreparable
harm to Nespresso.
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2. In an attempt to address these matters, Nespresso issued a letter to HiLine on
March 7, 2014, raising the issues set forth herein and requesting a response by March 26, 2014.
Consistent with its ongoing pattern of disregard for Nespresso and Nespresso's intellectual
property rights, HiLine did not respond to Nespresso's letter, until nearly a month later, on April
4, 2014, and when HiLine did respond, it did so by refusing to comply with Nespresso's
demands. Nespresso brings this action to put an end to HiLine's infringing activities and to
cease the ongoing and irreparable harm being suffered by Nespresso as a result.
THE PARTIES
3. Plaintiff Nespresso is organized under the laws of the state of Delaware and
maintains its principal place of business at 100 Park Avenue, 7th Floor, New York, New York
10017, United States.
4. On information and belief, Defendant HiLine is a corporation organized under the
laws of the state of Delaware and maintains its principal place of business at 1133 Broadway,
Ste. 706, New York, New York 10010, United States.
JURISDICTION AND VENUE
5. This is an action for trademark infringement, trade dress infringement, copyright
infringement and unfair competition. This action arises under the Lanham Act 15 U.S.C. § 1051
et seq., the United States Copyright Act 17 U.S.C. § 101, et seq., New York General Business
Law § 349(a) and New York common law. This Court has subject matter jurisdiction over this
action pursuant to at least 28 U.S.C. §§1331, 1338, and 1367 and 15 U.S.C. § 1121.
6. Venue is proper in this Court under 28 U.S.C. § 1391(b)(1) and (2) because
Defendant maintains its principal place of business within this District and a substantial part of
the events giving rise to this action occurred in and continue to occur within this District. Venue
is also proper under 28 U.S.C. § 1400(a).
NESPRESSO'S INTELLECTUAL PROPERTY ASSETS AND PRODUCTS
7. Plaintiff Nespresso is a leader in the single serve coffee market and has been
offering coffee/espresso machines and compatible espresso capsules, consumables and
accessories under the Nespresso® name in the United States as far back as 1990. For over 20
years, Nespresso and its affiliate, Nestle Nespresso S.A., together have invested hundreds of
millions of dollars to promote the Nespresso® brand in the U.S. and worldwide. As a result of
these significant investments, the Nespresso® brand and Nespresso® cone-shaped capsules have
become widely recognized and famous among consumers in the United States and globally, and
consumers in the U.S. have come to readily identify the NESPRESSO® name and the distinctive
shape, design and color scheme of the Nespresso® cone-shaped capsules (the "Nespresso Trade
Dress") with Nespresso.
8. Nespresso's and Nestle Nespresso S.A.'s investments in the Nespresso® brand
and the Nespresso Trade Dress include everything from Internet advertisements, stand alone
Nespresso retails stores in most major U.S. cities, entire Nespresso® boutique stores within high
end stores such as Bloomingdale's and Williams-Sonoma to national television ads that feature
celebrity endorsements. (See, e.g.. Exhibit B). These advertisements and promotional materials
consistently feature the NESPRESSO® name and the colorful Nespresso® cone-shaped
capsules, all of which have become famous and distinctive indicators of source that consumers in
the U.S. have come to associate with Nespresso.
9. Nespresso is also the exclusive licensee to a number of federally registered United
States trademarks and pending trademark applications covering the NESPRESSO® name and
other trademarks associated exclusively with the Nespresso brand, for use in the United States,
which are owned by Nespresso's affiliate, Societe des Produits Nestle S.A. ("SPN"). These
include U.S. trademark registration numbers 2009751 and 3813444 (the "Nespresso Marks").
(See Exhibit C).1
10. Pursuant to the exclusive sub-license agreement between Nespresso and Nestle
Nespresso S.A., Nespresso is granted the exclusive right to use the Nespresso Marks in
connection with marketing, distributing, selling, offering for sale and otherwise promoting the
Nespresso®capsules, consumables and accessories and a non-exclusive right and license to use
the Nespresso Marks in connection with espresso machines. Nespresso's exclusive right to use
the Nespresso Marks in connection with capsules, consumables and accessories includes the
right to enforce the Nespresso Marks in the United States, including the right to bring lawsuits
against third parties for infringement of the Nespresso Marks.
11. Additionally, Nespresso is the exclusive licensee to several copyrighted images
that are owned by SPN (the "Nespresso Copyrighted Materials"). These include the images
covered by U.S. Copyright application numbers 1-1400244291 (titled "Machines B2C Breville
Pixie Electric Red") and 1-1400244519 (titled "Vertuoline") that cover the product images set
forth in Exhibit D.
HILINE'S INFRINGING ACTIVITIES
12. On information and belief, HiLine was founded in July 2013 by Gene Kakaulin
and Ted Snyder with the sole mission of offering "More Choice" for Nespresso drinkers. (See,
e.g., Figure 1). HiLine's entire business is dedicated to the manufacture, offering for sale and
1The rights to the Nespresso Marks licensed to Nespresso include exclusive rights to use the Nespresso Marks in
connection with capsules, consumables and accessories and non-exclusive rights to use the Nespresso Marks in
connection with machines.
sale of what it has coined "Nespresso compatible capsules" (hereinafter, the "HiLine Capsules"),
which are very similar copies of the Nespresso® capsules. (See, e.g., Figure 2).
PREMIUM NESPRESSO CAPSULES ALTERNATIVE FOR LESS
Figure 1
Source: HiLine website <hilinecoffee.com>, 5/2/2014
ABOUT US
6URMISSNN
Figure 2
Source: HiLine website <hilinecoffee.com>, 5/2/2014
13. HiLine sells the HiLine Capsules through its website <hilinecoffee.com> and
through other online storefronts such as Amazon.com and ecscoffee.com. HiLine also promotes
its products using social media websites, including Facebook, Twitter, Pinterest and Google+.
14. To promote and sell the HiLine Capsules, HiLine uses the Nespresso Marks in a
number of ways that infringe Nespresso's trademark rights and dilute the distinctiveness of the
famous Nespresso Marks, including using "key words" in the meta tags of its website that
include the word "NESPRESSO," which helps to direct individuals searching for Nespresso®
products using the term "NESPRESSO" to HiLine's website. (See Figure 3).
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Figure 3
Source: HiLine website <hilinecoffee.com>, 5/2/2014
15. Throughout its website and social media pages, HiLine refers to the HiLine
Capsules as "HiLine Coffee Nespresso Capsules" and "HiLine Coffee Nespresso Pods,"
combining the name "HiLine" with the Nespresso Marks. (See, e.g., Figures 4-5). HiLine even
refers to the HiLine Capsules as "our Nespresso coffee capsules." (See, e.g., Figure 6).
HiLine Coffee Company uploaded a video
HiLine Coffee Nespresso Pods - Nespresso U
Demo
9 months ago • 1,146 views
Nespresso pods from HiLine Coffee can be used in most
Nespresso machines. This demo shows HiLine's premium.
Figure 4
Source: HiLine YouTube page <youtube.com/user/HiLineCofiee>, 5/2/2014
HiLine Coffee Company uploaded a video
HiLine Coffee Nespresso Capsules Citiz Demo
9 months ago • 2.716 views
Demo video of HiLine Coffee Nespresso Capsules used on Citiz
machine. For more information, please visit...
Figure 5
Source: HiLine YouTube page <youtube.com/user/HiLineCoffee>, 5/2/2014
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Figure 6
Source: HiLine website <hilinecoffee.com>, 4/1/2014
16. On its website and social media pages, HiLine also features a number of
advertisements that feature Nespresso® machines alongside the HiLine Capsules, implying an
affiliation with Nespresso. (See, e.g.. Figures 7-9).
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Source: HiLine website <hilinecoffee.com>, 5/2/2014
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Figure 8
Source: HiLine website <hilinecoffee.com>, 5/2/2014
Tuesday's featured blend is our
Medium Roast, another bestseller
Premium beans from Colombia
Guatemala. Cotta Rica and Kenya
are blended to create s slightly
sweet medium bodied espresso
with light acidity and a velvety
smooth finish Take 20% off
Medium Roast and other Mends at
www.HILIneCoffee.com with
code INDEPENDENCEthrough
7/311
.;.• Uploaded by
HiLineCoffee Nespresso
Compatible Capsules - Nespresso
U Demo www.HiLlneCoHee.com
other blends at
www.HILIneCoffee.com with
code INDEPENDENCEthrough
7/311
From Costa Rtca to Ethiopia HiLine
<plntere&
Start off your Monday with Mild
Roast espresso our b«stselling
blend A mix of the finest beans
from Colombia Costa Rica and
Kenya this light roast yields fruity
flavors with notes of cinnamon
citrus and blackberry Take 20% off
Mild Roatl and other blends at
www.HILIneCoffee.com with
code INDEPENDENCE through
7/311
HiLineCoffee Nespresso
Compatible Capsules - Pixie Demo
www.rliLineCDffee.com
A -
clean finesse of the finest African
Arabics beans Take 20% off your
purchase of Dark Roast and other
blends with code INDEPENDENCE
at www.HiLineCoffse.com
through 7/311
HiLineCoffee Nespresso
Compatible Capsules - Essenza
Demo www.HiLineCofffle.com
ft .. ... .
HiLine Coffee Nespresso
Compatible Capsules - Citiz Demo
•H Kristine
ample aroma i ake 2U% oil Uecat
Roast and other blends at
www.HILIneCoffee.com with
code INDEPENDENCE through
7/311
Demo Using HiLineCoffee Capsule
in Nespresso Citiz
www.HiLineCoffee.com
IP
Figure 9
Source: HiLine Pinterest page <pinterest.com/hilinecoffee/hiline-coffee>, 5/2/2014
17. The images displayed on HiLine's website include product images that are owned
by SPN and exclusively licensed to Nespresso. (See, e.g., Figure 10. Exhibit D).
NESPRESSO VERTUOUNE REVIEW
Recently Nespresso introduced a new coffee machine for the U.S.
market. We got promotionalmaterials inthe mailfromWilliams
Sonoma and received an email fromNespresso Clubabout this
new offering.This is very exciting So has Nespresso done it again?
Has it delivered a breakthroughcoffeetechnologythat wil make
coffee snobs raise their eye brows ina surprise and say, "woah,
didnt expect that froma single serve machine!*
We thinkifs a verygood machine, but probablynot worththe hype.
Why?Let's discuss al the pluses and minuses ofVertuoLine.
The plutsi:
• Itmakes a great espresso, similar intaste to what al
Nespresso machines produce.
• VertuoLinemakes "coffee" or 8 oz espresso-based drink,
similarinsize to a Keurigbrewed coffee Because it is espresso
based, it has crema and is much tastier than most K-cups on the
market that we have tried.
Figure 10
Source: HiLine website <hilinecoffee.com>, 5/2/2014
18. In addition, on its website and in other advertisements, HiLine makes statements
implying affiliation and/or sponsorship with Nespresso, including statements about Nespresso's
warranties. For example, on its FAQ page, HiLine states that "the [HiLine] [C]apsules we sell
will not damage your [Nespresso] machine, nor will they in any way void your warranty." (See
Figure 11).
FA!
HI Aw c»p*ur*i I buy from HILirw Coffw d*m*g« my N>»»rx»i«o michirw"?
10
'ii .I| .H''
ni > !«•![' ii !'t. w" M,» *<>!* >a i*:* tl1' -.;•''" M!ii»1'< "v ! • .i-ij, < Mi'-,!:i 'I I .• 'ij-i' n ' '-i.ii'u' r*-
I'r... A.VU ••.tli. .•.!•' :-n '•' r |[ •„!.•.• . "> . .,'.,'.••..'.- Ir. i.l|-..>-.,:' Ivil-c--'- .'. .Ii.'l lc. I . I ..i-ll.
.!lf\ '" ''"-',,c!tj!: -'"...fri"!.' 'I'l-t,^! ' • '* ' f >•",!. Ill) ' . >' f ); •-> |» . | , l( . - ;|:v H •' (P'5 !' I'M ',V !
I I ll||. ", (•-. ..,•'-:.','..• I.if.- Ui'-,.'!IC'< ' * .'' -'
Will I nofect any dilttrtncc m how On*c»p«ui« woik*'>
vt;ii • >»'>!!•<! -',:'-' 'I ; ' n, 1t<. • .' . s^l'^.l1" t; ,i<-' A i-l • h[.U .>''.'-' '!» ' t''.il. r°: ,' .< |. ' ) . (•• ' •
H"''l-' 1 \i> .|'li" ." .',|i'. ,«•
Figure 11
Source: HiLine website <hilinecoffee.com>, 5/2/2014
19. In addition, HiLine has designed its "cone" shape capsules to be nearly identical
replicas of the Nespresso Trade Dress in size, shape, colors and appearance. The severity of
HiLine's copying of the Nespresso Trade Dress is demonstrated in Figures 12-17 below, which
depict the HiLine Capsules alongside the Nespresso® capsules from various angles.
?iWWW*jC»PM* Uiw'i Carnal*
Figure 12
Comparison - Top of capsule
2msiSB±£ss^L.
HLiat't Carnal*
Figure 13
Comparison - Right side of capsule
11
ISS^c-
Figure 14
Comparison - Left side of capsule
Figure 15
Comparison - Front of capsule (A)
12
Supmi** Capurir HHiBeNC •**•*>
Figure 16
Comparison - Front of capsule (B)
IgytwCapMlK
I
I
Nf»|»rM»ot Csfnaln.
Figure 17
Comparison - Top of capsule
13
20. HiLine's efforts to manufacture, offer to sell and sell highly similar duplicates of
the Nespresso® capsules are only becoming more egregious as HiLine recently introduced a
"new" capsule design that has a silver top that is nearly identical in appearance to the top of the
Nespresso® capsules. (See Figure 18V
Figure 18
Comparison - Top of capsule
21. HiLine's marketing and advertising has emphasized the similarities between the
HiLine Capsules and the Nespresso® capsules, including the compatibility of the HiLine
Capsules with certain Nespresso® machines. HiLine has marketed its capsules as "Nespresso
capsules alternative" for consumers who desire to use Nespresso® machines, but who do not
want to pay for the real Nespresso®capsules. (See, e.g., Figures 1 and 19).
How can you sell at such a discount to Nespresso?
O-jt pf^e o $ to p'-< .jpii,i.' !.on<{:,4'rx3!o S ':'t' ?o* Ne'ip'e^io b. veiling •l^rrCSt \ va, * Tout tre tf -It
i '.I'tJ'.J'jV 'W^N'.lil :' N»",:*«" A^u " •- IV* • ij'ijf,! *.->!: ••fnp.r-v '• [N.:> *u>»1 /,•«.• .i'-- If »•*•• *•>••«•(} v ' -J-:!-, -i*
.r«l -'..I'v; ,,r r*v> vu^ "•". vx. A.:1i1l*i.'i'i,V!. ;/iiik~ rjU'if.•'-•'•;•;.•'.• **• ,-iv/ 1 iVi--.ft. "y .•,-:fwTV"V i -- ,i'i>1 ••v.rf-'rv:!-,
^r-nj,,,i^Hfi^''iFs '.v'n.''"•}<.< -v.it -••r^»'ii i- *r»- .j.id'i'r '?"»- r." -.nj..»:r t'.>r 4 •• * v*~ .,c 'r:*- > -^ vv~ •--. ..*• •. »..! <,£>*•••:;
Figure 19
Source: HiLine website <hilinecoffee.com>, 5/2/2014
22. HiLine's knowing and intentional infringement of Nespresso's trademarks and
comprehensive copying of the Nespresso Trade Dress has caused and continues to cause
confusion among consumers as to the source, sponsorship and/or affiliation of HiLine's products
with Nespresso, and has irreparably harmed and continues to irreparably harm Nespresso's
reputation and the Nespresso® brand.
14
23. HiLine has refused to comply with Nespresso's requests for HiLine to cease
infringement of the Nespresso Marks and the Nespresso Trade Dress and, after responding to
Nespresso's initial letter whereby Nespresso raised these issues, HiLine defiantly
misappropriated the Nespresso Copyrighted Materials without Nespresso's consent. (See, e.g.,
Exhibit D). Accordingly, Nespresso is left with no options other than to file this lawsuit to
protect some of its most valuable assets—its brand identifiers and product promotional materials.
COUNT I: TRADEMARK INFRINGEMENT UNDER THE LANHAM ACT.
15 U.S.C. S 1114m
24. Nespresso repeats and incorporates herein each and every allegation set forth in
paragraphs 1 to 23 of this Complaint.
25. Nespresso has exclusive rights, dating back to at least 1990, in and to the
Nespresso Marks for use in the United States in connection with espresso capsules, consumables
and accessories that well predate HiLine's use of the Nespresso Marks.
26. HiLine is using the Nespresso Marks in connection with the manufacture, offering
for sale and sale of the HiLine Capsules, which are highly similar to the Nespresso® capsules.
Such use by HiLine of the Nespresso Marks in commerce in connection with these goods is
likely to cause, has caused and continues to cause consumer confusion.
27. Neither Nespresso, SPN nor Nestle Nespresso S.A. have consented to HiLine's
use of the Nespresso Marks.
28. HiLine had actual or constructive knowledge of Nespresso's trademark rights
prior to using or continuing to use the Nespresso Marks.
29. HiLine's use of the Nespresso Marks constitutes trademark infringement of U.S.
trademark registration numbers 2009751, 1607148 and 3813444 in violation of 15 U.S.C.
§1114.
15
30. The willful and intentional nature and the reckless disregard of the most basic
level of diligence by HiLine makes this false designation of origin an exceptional case pursuant
to 15 U.S.C. § 1117(a) and, accordingly, Nespresso is entitled to an accounting for profits,
profits, enhanced profits and damages, actual damages, costs and reasonable attorneys' fees.
31. As a result of HiLine's trademark infringement, Nespresso has suffered damages
in an amount to be determined at trial.
32. On information and belief, HiLine has gained profits by virtue of its infringement
of the Nespresso Marks.
33. Nespresso has suffered and will continue to suffer irreparable harm to its
business, reputation and goodwill as a result of HiLine's actions, and Nespresso lacks an
adequate remedy at law to compensate for this harm and damage. Accordingly, Nespresso is
entitled to an injunction by the Court pursuant to 15 U.S.C. § 1116(a).
COUNT II: FALSE DESIGNATION OF ORIGIN UNDER THE LANHAM ACT.
15 U.S.C. S 1125(d)
34. Nespresso repeats and incorporates herein each and every allegation set forth in
paragraphs 1 to 33 of this Complaint.
35. HiLine's use of the Nespresso Marks as "key words" in the meta tags of its
website violates Section 43 of the Lanham Act, 15 U.S.C. § 1125(d).
36. Nespresso has had the exclusive right to use and has used the Nespresso Marks in
connection with espresso capsules, consumables and accessories in the U.S. dating back to at
least 1990.
37. HiLine is knowingly and intentionally using the word "Nespresso" and other
similar terms and phrases that include the Nespresso Marks as key words in the meta tags of its
website.
16
38. HiLine's use of the word "Nespresso" and other similar terms and phrases that
include the Nespresso Marks as key words in the meta tags of its website is with the intent of
diverting consumers, who use search engines to search the Internet for Nespresso's website and
products, to HiLine's website.
39. In using the Nespresso Marks in the meta tags of its website, it is HiLine's intent
that consumers will be tricked into purchasing and/or instead make the decision to purchase the
HiLine Capsules to the commercial gain of HiLine. Indeed, on information and belief, attempts
to locateNespresso's website and purchase Nespresso's products have been divertedto HiLine's
website and continue to be diverted to HiLine's website. On information and belief, at least
some of these consumers, as a result, have purchased the HiLine Capsules instead of Nespresso's
authentic capsules.
40. HiLine's use of the Nespresso Marks in the meta tags of its website, at least
initially, is likely to cause, has caused and continues to cause confusion among consumers as to
the source, sponsorship, affiliation or endorsement of HiLine's website and its products.
41. Neither Nespresso, SPN nor Nestle Nespresso S.A. have consented to HiLine's
use of the Nespresso Marks in the meta tags of its website.
42. HiLine had actual or constructive knowledge of Nespresso's prior trademark
rights prior to using, or continuing to use, the Nespresso Marks.
43. The willful and intentional nature and the reckless disregard of the most basic
level of diligence by HiLine makes this false designation of origin anexceptional case pursuant
to 15 U.S.C. § 1117(a) and, accordingly, Nespresso is entitled to an accounting for profits,
profits, actual damages, costs and reasonable attorneys' fees.
17
44. As a result of HiLine's false designation of origin, Nespresso has suffered
damages in an amount to be determined at trial.
45. On information and belief, HiLine has gained profits by virtue of its false
designation of origin.
46. Nespresso has suffered and will continue to suffer irreparable harm to its
business, reputation and goodwill as a result of HiLine's actions, and Nespresso lacks an
adequate remedy at law to compensate for this harm and damage. Accordingly, Nespresso is
entitled to an injunction by the Court pursuant to 15 U.S.C. § 1116(a).
COUNT III: FALSE DESIGNATION OF ORIGIN UNDER SECTION 43(a) OF
THE LANHAM ACT. 15 U.S.C. S 1125(a)
47. Nespresso repeats and incorporates herein each and every allegation set forth in
paragraphs 1 to 46 of this Complaint.
48. HiLine's use of the Nespresso Marks in connection with the "HiLine" name and
reference to the HiLine Capsules as "Nespresso capsules" to promote, offer for sale and sell the
HiLine Capsules violates Section 43 of the LanhamAct, 15U.S.C. § 1125(a).
49. HiLine's use of the Nespresso Marks in connection with the HiLine Capsules
falsely suggests that the HiLine Capsules are connected with, sponsored by, affiliated with or
related to Nespresso. HiLine's statements, including those related to the warranties offered by
Nespresso in connection with Nespresso's machines, bolsters this false association with
Nespresso. This false association with Nespresso is furthered by HiLine's prominent
advertisements on its website and social media pages whereby it displays the HiLine Capsules
alongside Nespresso® machines, which conveys the message that the HiLine Capsules are
endorsed by and/or affiliatedwith Nespresso and are intendedto go together.
18
50. Neither Nespresso, SPN nor Nestle Nespresso S.A. have consented to HiLine's
use of the Nespresso Marks, and neither Nespresso, SPN nor Nestle Nespresso S.A. have
authorized HiLine's sale or offer for sale of theHiLine Capsules using theNespresso Marks.
51. HiLine's unauthorized use of the Nespresso Marks constitutes a false designation
of origin in violation of 15 U.S.C. § 1125(a).
52. HiLine had actual knowledge of Nespresso's trademark rights prior to using, or
continuing to use, the Nespresso Marks.
53. The willful and intentional nature and the reckless disregard of the most basic
level of diligence by HiLine makes this trademark infringement an exceptional case pursuant to
15 U.S.C. § 1117(a) and, accordingly, Nespresso is entitled to an accounting for profits, profits,
actual damages, costs and reasonable attorneys' fees.
54. As a result of HiLine's trademark infringement, Nespresso has suffered damages
in an amount to be determined at trial.
55. Oninformation and belief, HiLine has gained profits by virtue of its infringement
of the Nespresso Marks.
56. Nespresso has suffered and will continue to suffer irreparable harm to its
business, reputation and goodwill as a result of HiLine's actions, and Nespresso lacks an
adequate remedy at law to compensate for this harm and damage. Accordingly, Nespresso is
entitled to aninjunction bythe Court pursuant to 15 U.S.C. § 1116(a).
COUNT IV: TRADE DRESS INFRINGEMENT UNDER SECTION 43(a) OF THE
LANHAM ACT. 15 U.S.C. S 1125(a)
57. Nespresso repeats and incorporates herein each and every allegation set forth in
paragraphs 1 to 56 of this Complaint.
19
58. Nespresso is the exclusive licensee of all right and title to the Nespresso Trade
Dress in the United States. The Nespresso Trade Dress, as embodied in Nespresso's cone-
shaped capsules, is inherently distinctive and/or has acquired secondary meaning, and is not
functional.
59. In addition, based on Nespresso's extensive and consistent advertising, promotion
and sales throughout the United States, the Nespresso Trade Dress has acquired distinctiveness
and enjoys secondary meaning among consumers, identifying Nespresso as the source of these
products.
60. Nespresso's extensive promotion and use of the distinctive Nespresso Trade Dress
has resulted in Nespresso's acquisition of valuable, legally protected rights in the Nespresso
Trade Dress as well as considerable customer goodwill.
61. HiLine has misappropriated the Nespresso Trade Dress by mimicking the
distinctive elements of the Nespresso Trade Dress almost in their entirety.
62. HiLine's manufacture, distribution, offering for sale and sale of the HiLine
Capsule products with an identical "cone" shape and using a similar color scheme as the
Nespresso Trade Dress is likely to cause and has caused confusion, mistake and/or deception
among consumers as to the source, affiliation and/or sponsorship of HiLine with Nespresso
and/or as to the source, affiliation and/or sponsorship by Nespresso of HiLine's goods and/or
commercial activities.
63. HiLine's manufacture, distribution, offering for sale and sale of the HiLine
Capsule products with an identical "cone" shape and using a similar color scheme as the
Nespresso Trade Dress enables HiLine to unfairly benefit from Nespresso's reputation and
20
success in the marketplace, thus giving HiLine's infringing products sales and commercial value
that they otherwise would not have.
64. HiLine had knowledge of the Nespresso Trade Dress when it designed the HiLine
Capsules, and HiLine has refused to change the design andappearance of the HiLine Capsules in
response to Nespresso's clear objections. As such, HiLine's infringement has been and
continues to be intentional, willful and without regardto the NespressoTrade Dress.
65. Nespresso, SPN nor Nestle Nespresso S.A. have consented to HiLine's use of the
Nespresso Trade Dress, and neither Nespresso, SPN nor Nestle Nespresso S.A. have authorized
HiLine's saleor offer for sale of the HiLine Capsules usingthe Nespresso TradeDress.
66. The willful and intentional nature and the reckless disregard of the most basic
level of diligence by HiLine makes this trade dress infringement an exceptional case pursuant to
15 U.S.C. § 1117(a) and, accordingly, Nespresso is entitled to an accounting for profits, profits,
actual damages, costs and reasonable attorneys' fees.
67. As a result of HiLine's trade dress infringement, Nespresso has suffered damages
in an amount to be determined at trial.
68. Oninformation andbelief, HiLine has gained profits byvirtue of its infringement
of the Nespresso Trade Dress.
69. Nespresso has suffered and will continue to suffer irreparable harm to its
business, reputation and goodwill as a result of HiLine's actions, and Nespresso lacks an
adequate remedy at law to compensate for this harm and damage. Accordingly, Nespresso is
entitled to an injunction bythe Court pursuant to 15 U.S.C. § 1116(a).
21
COUNT V: COPYRIGHT INFRINGEMENT UNDER § 501 OF THE UNITED
STATES COPYRIGHT ACT. 17 U.S.C. S 501
70. Nespresso repeats and incorporates herein each and every allegation set forth in
paragraphs 1 to 69 of this Complaint.
71. Nespresso's affiliate SPN owns U.S. copyright application numbers 1-
1400244291 (titled "Machines B2C Breville Pixie Electric Red") and 1-1400244519 (titled
"Vertuoline"), which are pending with the U.S. Copyright Office, that cover the Nespresso
Copyrighted Materials. Nespresso has exclusive rights to the Nespresso Copyrighted Materials
for use in the United States.
72. HiLine's use of the Nespresso Copyrighted Materials on its website and other
promotional materials to promote and sell the HiLine Capsules constitutes copyright
infringement in violation of 17 U.S.C. § 501.
73. Neither Nespresso, SPN nor Nestle Nespresso S.A. have consented to HiLine's
use of the Nespresso Copyrighted Materials, and neither Nespresso, SPN nor Nestle Nespresso
S.A. have authorized HiLine's sale or offer for sale of the HiLine Capsules using the Nespresso
Copyrighted Materials.
74. HiLine's copyright infringement has been willful, knowingand intentional.
75. On information and belief, HiLine has gainedprofits by virtue of its infringement
of the Nespresso Copyrighted Materials.
76. Nespresso has suffered and will continue to suffer irreparable harm to its
business, reputation and goodwill as a result of HiLine's actions, and Nespresso lacks an
adequate remedy at lawto compensate for this harm and damage. Accordingly, Nespresso is
entitledto an injunction by the Court pursuant to 17U.S.C. § 502.
22
COUNT VI: UNLAWFUL DECEPTIVE ACTS AND PRACTICES UNDER N.Y.
GEN. BUS. LAW S 349(a)
77. Nespresso repeats and incorporates herein each and every allegation set forth in
paragraphs 1 to 76 of this Complaint.
78. HiLine knowingly and intentionally has manufactured, offered for sale and sold
and continues to manufacture, offer for sale and sell the HiLine Capsules by improperly using
the Nespresso Marks and improperly copying the Nespresso TradeDress.
79. HiLine's use of the Nespresso Marks andcopying of the Nespresso Trade Dress is
without Nespresso's consent and without theconsent of SPN or Nestle Nespresso S.A.
80. HiLine's acts complained of herein are materially misleading and, directed at
consumers and have mislead, continue to mislead and/or are likely to mislead reasonable
consumers as to the origin of the HiLine Capsules, and have deceived, continue to deceive and/or
are likely to deceive the public into believing that HiLine's products originate from, are
associated withor are otherwise authorized or endorsed by Nespresso.
81. HiLine's deceptive acts and practices involve public sales activities of a recurring
nature.
82. HiLine had knowledge of the Nespresso Marks and the Nespresso Trade Dress
when it began using theNespresso Marks and when it designed theHiLine Capsules, and HiLine
has refused to cease its improper use of the Nespresso Marks or change the design and
appearance of the HiLine Capsules in response to Nespresso's clear objections. As such,
HiLine's infringement has been and continues tobeintentional, willful and without regard tothe
Nespresso Marks and Nespresso Trade Dress. Accordingly, Nespresso is entitled to an
accounting for profits, profits, enhanced profits and damages, actual damages, costs and
reasonable attorneys' fees.
23
83. As a result of HiLine's trademark and trade dress infringement, Nespresso has
suffered damages in an amount to be determined at trial.
84. On information and belief, HiLine has gained profits by virtue of its deceptive
acts and practices.
85. Nespresso has suffered and will continue to suffer irreparable harm to its
business, reputation and goodwill as a result of HiLine's actions, and Nespresso lacks an
adequate remedy at law to compensate for this harm and damage. Accordingly, Nespresso is
entitled to an injunction by the Court.
COUNT VII: COMMON LAW UNFAIR COMPETITION
86. Nespresso repeats and incorporates herein each and every allegation set forth in
paragraphs 1 to 85 of this Complaint.
87. Neither Nespresso, SPN nor Nestle Nespresso S.A. have consented to HiLine's
use of the Nespresso Marks or the Nespresso Trade Dress.
88. HiLine's use of the Nespresso Marks and the Nespresso Trade Dress is with the
intent to deceive the public into believing HiLine's goods are affiliated with Nespresso.
HiLine's unauthorized use of the Nespresso Marks and the Nespresso Trade Dress constitutes
passing off and unfair competition in violation of the common law of the state of New York.
89. HiLine had actual knowledge of Nespresso's trademark and trade dress rights
prior to using, or continuing to use, the Nespresso Marks and the Nespresso Trade Dress,
resulting in willful and intentional conduct. Accordingly, Nespresso is entitled to an accounting
for profits, profits, actual damages, costs and reasonable attorneys' fees.
90. As a result of HiLines's conduct, Nespresso has suffered damages inanamount to
be determined at trial.
24
91. Nespresso has suffered and will continue to suffer irreparable harm to its
business, reputation and goodwill as a result of HiLine's actions, and Nespresso lacks an
adequate remedy at law to compensate for this harm and damage. Accordingly, Nespresso is
entitled to an injunction by the Court.
PRAYER FOR RELIEF
WHEREFORE, as a result of the unlawful acts of Defendant set forth in each of the
counts above, plaintiff Nespresso prays that the Court enter a judgment against Defendant:
(a) Preliminarily and permanently enjoining Defendant, its agents, servants, employees,
officers and all persons in active concern and participation with them:
i. From using the Nespresso Marks or any marks similar thereto in connection
with the manufacture, distribution, advertising for sale, promotion or sale of
any unauthorized goods or services, including the manufacture, distribution,
advertisement, promotion, holding for sale or selling of the HiLine Capsules
and in the meta tags of any websites dedicated to the same (including
<hilinecoffee.com>);
ii. From using the Nespresso Trade Dress or any trade dress similar thereto in
connection with the manufacture, distribution, advertising for sale, promotion
or sale of any unauthorized goods or services, including the manufacture,
distribution, advertisement, promotion, holding for sale or selling of the
HiLine Capsules;
iii. From using, displaying or otherwise exploiting the Nespresso Copyrighted
Materials in any way;
25
iv. From using any logo, trade name, trademark or trade dress which may be
calculated to falsely represent or which has the effect of falsely representing
that the services or products of Defendant are sponsored by, authorized by, or
in any way associated with the Plaintiff Nespresso or the Nespresso® brand;
v. From infringing Plaintiff Nespresso's exclusively licensed trademarks, trade
dress and copyrighted materials; or
vi. From falsely representing themselves as being connected with, sponsored by
or associated with Plaintiff Nespresso or the Nespresso® brand.
(b) Ordering the destruction of all unauthorized goods, bearing any copy or colorable
imitation of the Nespresso Marks or the Nespresso Trade Dress, including the HiLine
Capsules.
(c) Ordering the destruction of all materials displaying the Nespresso Copyrighted
Materials, modifications thereof or any derivative works created there from.
(d) Pursuant to 15 U.S.C. § 1116(a), ordering Defendant to file with the Court and serve
upon Nespresso's counsel, within thirty (30) days after service of the order of
injunction, a report in writing under oath setting forth in detail the manner and form
in which Defendant has complied with the injunction.
(e) Finding that, by the acts complained of above, Defendant has infringed Nespresso's
exclusively licensed federally registered trademarks in violationof 15U.S.C. § 1114.
(f) Finding that, by the acts complained of above, Defendant has created a false
designation of origin, false representation of association and has infringed the
Nespresso Marks and the Nespresso Trade Dress in violationof 15U.S.C. § 1125(a).
26
(g) Finding that, by the acts complained of above, Defendant has created a false
designation of origin and false representation of association in violation of 15 U.S.C.
§ 1125(d).
(h) Finding that, by the acts complained of above, Defendant has infringed Nespresso's
exclusively licensed copyrights in violation of 17 U.S.C. § 501.
(i) Finding that the acts complained of above constitute willful infringement of the
Nespresso Marks, the Nespresso Trade Dress and the Nespresso Copyrighted
Materials,
(j) Ordering Defendant to provide Nespresso with a full accounting of all manufacture,
distribution and sale of the HiLine Capsules, including all profits derived therefrom,
(k) Ordering Defendant to pay Nespresso:
i. Defendant's profits for sale of the infringing goods (i.e., the HiLine Capsules)
using the Nespresso Marks, the Nespresso Trade Dress and the Nespresso
Copyrighted Materials;
ii. Treble actual damages in connection with Defendant's infringement of the
Nespresso Marks;
iii. Actual damages in connection with Defendant's infringement of the
Nespresso Trade Dress;
iv. Statutory damages in connection with Defendant's infringement of the
Nespresso Copyrighted Materials; and
v. Nespresso's costs and reasonable attorneys' fees incurred in this matter,
(k) Awarding Nespresso pre-judgment andpost-judgment interest againstDefendant.
27
(1) Awarding Nespresso such other and further relief as the Court may deem just and
proper.
JURY DEMAND
Nespresso hereby demands a trial by jury.
Dated: New York, New York
May 6, 2014
Mayer Brown LLP
a.-
^
A. John P. Mancini
1675 Broadway
New York, New York 10019
Telephone: (212) 506-2500
imancini@maverbrown. com
Erick J. Palmer (pro hac vice to befiled)
Kristine M. Young (pro hac vice to befiled)
71 South Wacker Drive
Chicago, Illinois 60606
Telephone: (312) 782-0600
eipalmer@maverbrown.com
kyoung@maverbrown.com
Attorneysfor PlaintiffNespresso USA, Inc.
28
Our capsules are compatible with the following Nespresso models. Citiz, Essenza, Maestria, U. Le
Cube, Lattissima Plus, Inissia and Pixie. Additionally, each batch of capsules is rigorously tested in all models of
Nespresso machines for quality and consistency and to ensure proper operation. Please note that Pixie and U
machines purchased after November 1,2013 are only compatible with Greenwich Dark Roast and Grand Central
Medium Roast. For questions or more information, please contact us at answer@hilinecoffee.com.
Broadway Dark Roast
PACK OF 10 CAPSULES
DARK ROASTS
Liberty Loop Dark
PACK OF 10 CAPSULES
Source: HiLine website, 5/2/2014
ABOUT US
OUR MISSION
Source: HiLine website <hilinecoffee.com>, 5/2/2014
Source: Nespresso television commercial
Source: Nespresso in-store display
Source: Nespresso website <nespresso.com>, 5/2/2014
Int. Q.: 30
Prior L\& CI: 46
Re*. No. 2,009.751
United States Patent and Trademark Office ****** maiw
TRADEMARK
PRINCIPAL REGISTER
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Image covered by U.S. Copyright Application 1-1400244519, titled "Vertuoline"
Image covered by U.S. Copyright Application 1-1400244291, titled "Machines B2C Breville
Pixie Electric Red"